Leaffer, Marshall --- "The Rational Limits of Trademark Law (2000)" [2006] ELECD 259; in Hansen, Hugh (ed), "US Intellectual Property Law and Policy" (Edward Elgar Publishing, 2006)

Book Title: US Intellectual Property Law and Policy

Editor(s): Hansen, Hugh

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845428662

Section: Chapter 3

Section Title: The Rational Limits of Trademark Law (2000)

Author(s): Leaffer, Marshall

Number of pages: 26

Extract:

Chapter 3

The Rational Limits Of
Trademark Law (2000)
Graeme B. Dinwoodie*


I N T RO D U C T I O N

Over the last two decades, the reach of U.S. trademark law has significantly
expanded in several different ways. In this essay, I will focus on three expansions
that have tested the limits of trademark law: the subject matter potentially
protected as trademarks has become virtually unlimited; the scope of rights
afforded a trademark owner has been extended to prevent noncompeting uses by
others that are not likely to cause consumer confusion but which may dilute the
distinctiveness of the trademark owner's mark; and, most recently, trademarks
have been reflexively afforded additional protection against conduct known as
cybersquatting. After reviewing these three developments, I will suggest that
each implicates in its own way a fundamental question about the direction of
U.S. trademark law: what is to be the lodestar that will guide trademark law and
help establish rational limits on protection?1 I argue that trademark law must
develop by explicit reference to its basic purposes. Although these purposes are
somewhat general and more varied in nature than often recognized, attention to
them will ground trademark law in present commercial reality without foreclos-
ing adaptation to future social developments. Trademark law is a mercantile law.
As such, it is (and must be) both shaped and limited by the market forces that it

* Professor of Law, Chicago-Kent College of Law. Thanks to Mark Janis, Graeme
...